Protection Processes: The above section addresses the processes by which intellectual assets are created. Coupled closely with their creation is the topic of protection. Since intellectual assets reside primarily in the minds of the company’s officers and employees, it is critical that they be schooled in what intellectual assets are, how valuable they are to the company, and how to protect them. All too frequently intellectual assets are lost because individuals employed by the enterprise lack knowledge of one of or more of these subjects. Several intellectual asset training techniques are available to remedy this situation: (1) employee entrance seminars in which the company’s policies for handling proprietary information or explained to new employees, (2) employee exit interviews in which the limitation on the use or disclosure of the company’s proprietary rights by former employees are detailed, (3) dissemination to employees of manuals explaining their obligations for the treatment of the company’s proprietary information, and (4) ongoing security audits to reinforce in employees their ongoing intellectual asset security obligations. Elements is some these common protection processes include:
Intellectual Property Brochure/Manual for Employees: Such a brochure should define all types of relevant IP: patents, trademarks, copyrights, and trade secrets. It should explain the company’s policies, objectives and procedures in relation to IP, including employment agreements, ownership of intellectual property and how employees are to handle information about the company’s trade secrets when dealing with third parties. It also includes detailing the procedures by which the company establishes its patent, trade secret, copyright, and trademark protection. Finally it should provide instructions for managing information about inventions, brands and trademarks and for filing invention disclosure forms and laboratory notebooks.
Employment Agreements: These agreements should set out the duties and obligations of the employee and the corporation with respect intellectual property. The agreement should oblige employees to assign to the company all inventions made during their employment which relate to the company’s business. It should additionally direct employees not to disclose to others any confidential information of the company, during and/or after employment with the company. It would also include the confidentiality and nondisclosure restrictions.
Litigation Control and Policies: Policing unauthorized patent, trademark, copyright, and trade secret use is important because the intellectual property owner can lose the intellectual property if it is not enforced. Procedures need to be established for the enforcement of IP, such as reporting discovered infringements, writing cease-and-desist letters, procurement and analysis of competitive products, and ultimately litigation. In-house/outside counsel must be involved at every strange. Litigation effort requires extensive commitment of executive and other professional resources within the company once litigation commences and may result in significant legal fees during the course of the case.
Patent and Other Intellectual Property Committees: Such committees are typically made up of R&D and business managers with knowledge of the business and technical areas, along with patent counsel. These committees evaluate invention disclosures and decide on the form of protection to be used (publication to preserve freedom use, trade secret or patent). They decide which invention should be filed in foreign countries and report to management on pending issues. Such committees also typically prioritize the patent applications for law Department.
Laboratory Notebooks for Researchers: These notebooks establish a record of the inventor’s work, including dates of conception reduction to practice, as well as identification of all inventors of a particular invention. They must have signatures/dates of the inventor and typically at least one or two witnesses. The notebooks also include a reminder that the notebook and its contents are company proprietary. These notebooks are traditionally in hard copy form but today it is much more common to use electronic laboratory notebooks available from multitude of commercial providers.
Patent Invention Disclosure Form: These forms include a short abstract/description of the invention, including what problem the invention solves, how it solves a problem, and what product or business area may use the invention. It provides the names of the inventors, including nonemployees. Supporting materials including a chronology of key dates related to the invention (included from the inventor’s laboratory notebooks, internal reports and other references).
Filing Patent Applications: The patent application or prosecution is a formal process, and depends upon the jurisdiction for which the patent sought. Although for small companies trying to save money a patent can be filed pro se by the inventor, this is discouraged. Since patent counsel for prosecution is available globally at many price points and quality levels, it is strongly recommended the patent counsel be used to prepare and prosecute an application.
Trademark Development and Maintenance: These processes are typically overseen by a trademark committee comprised of business and marketing personnel and trademark attorneys. It’s important to establish procedures to review and approve all new marks to be used by the Corporation. Relevant information to be captured in the intellectual property database should include the proposed mark, the services or products on which the mark will be used, and the timetable for the introduction of those products and services. The committee should also identify the jurisdictions in which trademarks will be sought. Trademark searches are then conducted in those jurisdictions, and assuming there are no potential issues with conflicting marks, the trademark application process should be commenced with an internal law department or external trademark attorney. Once a mark is been applied for and/or utilized, procedures to ensure the company uses each trademark properly (such as using the trademark notice in advertising and labeling and avoiding incorrect grammatical forms of the trademark) is imperative.
Physical Security Processes: Reasonable physical security must also be implemented to protect proprietary intellectual property. Among these procedures are: document storage, tracking, filing, and lockup. Procedures normally should be implemented to protect confidential engineering drawings, specifications, and other documents. Furthermore, enforcing these procedures instills in employees the knowledge that proper protection of proprietary information essential to the company’s well-being. The flipside of securing proprietary documents is effective document destruction. It does little good to track and control movement of proprietary documents within the company if adequate precautions are not taken when disposing of such documents. Sifting through dumpsters by industrial espionage agents should never be discounted.